Oracle v. CLoudIng IP LLC

1. Case Identification

• Patent #: 6,738,799
• Filed: December 8, 2012
• Petitioner(s): Oracle Corporation
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1, 5-10, 23, 24, and 37

2. Patent Overview

• Title: Methods and Apparatuses for File Synchronization and Updating Using a Signature List
• Brief Description: The ’799 patent discloses methods for synchronizing files between two computers, typically a server (first computer) and a client (second computer). The system involves the server determining if the client's version of a "subscription file" is outdated by comparing signature lists, generating a "delta" or update file containing only the differences, and transmitting this delta file to the client to update its local copy.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 9, 10, 23, and 24 are obvious over Balcha in view of Miller.

• Prior Art Relied Upon: Balcha (Patent 6,233,589) and Miller (Patent 5,832,520).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Balcha taught the core method of independent claim 1: a system where a first computer generates a delta file to update a second computer. Balcha disclosed comparing two files by breaking them into segments, creating signatures (e.g., CRC values) for each, comparing signature lists to find differences, and creating a delta file with commands to reconstruct the new file. Petitioner asserted that Balcha’s server performs this detection and delta file generation "without interaction" from the second computer, satisfying a key limitation. Miller was cited to supply the limitations of dependent claims, specifically teaching that an update file can be a self-extracting executable transmitted via electronic mail (claim 5) and that the method is applicable to both software updates (claim 9) and document updates (claim 10).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Balcha and Miller because they share the similar purpose of efficiently updating files on a remote computer using delta files. Applying Miller’s well-known method of packaging an update as a self-executing file and delivering it via email to Balcha’s file synchronization system was presented as a predictable and simple design choice.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination merely applies a known delivery mechanism (Miller) to a known data-differencing system (Balcha), involving no technical hurdles.

Ground 2: Claim 37 is anticipated by Balcha.

• Prior Art Relied Upon: Balcha (Patent 6,233,589).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Balcha disclosed every element of claim 37, which recites a method where a first computer determines if a second computer has the latest file version "without interaction," generates an update if needed, and transmits it. Balcha described a system with two servers (e.g., 22 and 24) that maintain identical copies of a base file. When server 22 modifies its file, it inherently knows server 24’s copy is outdated. Server 22 then, without interaction from server 24, uses its stored signature file to generate a new delta file and communicates it to server 24. This process, Petitioner argued, directly maps to the steps of determining the update need, generating the update, and transmitting it, all performed by the first computer without interaction from the second.

Ground 3: Claims 1, 5-10, 23, 24, and 37 are obvious over Miller in view of Freivald.

• Prior Art Relied Upon: Miller (Patent 5,832,520) and Freivald (Patent 5,898,836).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Miller taught the fundamental system for creating and using a difference file ("DIFF file") to update a file on a second computer from an old version to a new version. Freivald was introduced to teach the triggering mechanism. Freivald disclosed a "minder" server that, without client interaction, periodically checks a monitored document (e.g., using CRCs or timestamps) to see if it has changed. Upon detecting a change, Freivald’s server automatically transmits an updated copy of the document to the subscribed client.
  • Motivation to Combine: A POSITA would be motivated to combine these references to create a more automated and efficient update system. Integrating Freivald’s proactive change-detection server with Miller’s efficient difference-file generation technique was argued to be a commonsensical step to avoid unnecessary data transfer and automate the update process.
  • Expectation of Success: The combination was presented as predictable, as it involved integrating two known techniques for file management—automated change detection and delta-file generation—that were designed to work in networked computer environments.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 6-8 are obvious over Balcha, Miller, and Freivald; claim 37 is anticipated by Freivald; claims 1, 23, 24, and 37 are anticipated by Williams (Patent 5,990,810); and claims 5-10 are obvious over Williams in view of Miller.

4. Key Claim Construction Positions

• "Signature List": Petitioner argued this term should be construed broadly to mean any table or listing of unique identifiers (e.g., CRCs, checksums, hashes) determined by any signature algorithm. This construction was vital for mapping the term onto the various hashing techniques disclosed in the prior art.
• "Without Interaction": Citing the prosecution history of the parent application, Petitioner argued this phrase should be interpreted to mean that the specific steps of monitoring for a change and generating the update file are performed by the server computer alone. It does not require complete operational independence, as an initial client "subscription" action is permitted by the patent. This construction was positioned as critical to aligning the prior art with the claims while acknowledging the patent’s own disclosure.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner asserted that the core concepts of the ’799 patent were well-known in the art long before the patent's priority date. The petition emphasized that difference-based update algorithms (such as the RSYNC algorithm from 1996) and publish/subscribe notification systems were established, commonplace technologies in distributed computing. The invention was therefore framed as a predictable combination of these known elements to achieve an expected result.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1, 5-10, 23, 24, and 37 of Patent 6,738,799 as unpatentable.